15 July 2016

TransTasman Patents (AP and SEP)

The Commerce Committee of the New Zealand Parliament in its report on the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015 (NZ) has called for amendments to the proposed trans-Tasman patent registration regime.

The report notes that

The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill seeks to amend the Patents Act 2013. The main purpose of the bill is to implement a single trans-Tasman registration regime for Australian and New Zealand patent attorneys. The bill also proposes ... amendments to facilitate the implementation of a single patent application process and a single patent examination process with Australia.

The Single Application and Examination Processes for patents (SAP and SEP) would allow applicants to make a single application for a patent in either Australia or New Zealand, and have the pair of applications examined by a single examiner in either Australia or New Zealand. Implementation of the processes requires enabling legislation in both countries. The Australian Parliament passed the Intellectual Property Laws Amendment Act 2015 (Cth) last year to allow for SAP and SEP, with the Patents (Trans-Tasman Patent Attorneys and Other Matters) Bill being introduced into the New Zealand Parliament in 2015 but as yet not passed.

In discussing SAP and SEP the report comments

Removal of single patent application and single examination processes

Clause 5 would insert new section 220A into the Act to facilitate the development and implementation of a single patent application process (SAP) and a single patent examination process (SEP) by the Intellectual Property Office of New Zealand (IPONZ) and IP Australia.

This provision provoked much concern, and we have examined it at length. For the following reasons, we recommend that clause 5 be deleted.

We consider that SAP and SEP are unlikely to provide significant benefits to New Zealand. This is reflected in concerns raised by the majority of submitters. The main reasons we decided that SAP and SEP should not proceed are:

• Lack of benefits either to businesses or to patent attorney firms making applications on their behalf: if a SAP was used, there would be only very small cost and time savings. A SEP would offer no benefits because differences in patent law and practice between New Zealand and Australia mean that applicants would still be required to consider separate objections to both applications, and to formulate different responses to those objections. As a result, applicants using a SEP would be unlikely to save any time or costs.

• Increased administrative costs to New Zealand businesses: there would be increased costs of IPONZ examination and filing fees.

• Significant costs: there would be significant IT infrastructure costs to establish and implement a SAP, and ongoing maintenance costs. Establishing a SEP would also entail significant costs, including for examiner training and IT.

• We understand that applicants are unlikely to use a SAP and a SEP, mainly for commercial reasons.

• Work-sharing: examiners in IPONZ and IP Australia already benefit from in- creased online availability of the examination reports that they and other patent offices produce, which reduces duplication of examination work. We are also aware of advancements in international patent examination work-sharing arrangements which aim to increase efficiencies between patent offices. They include global initiatives such as the “Global Patent Prosecution Highway”. These work-sharing initiatives provide alternative means of achieving the benefits of a SEP, without the need to amend the Act, and involve less cost to IPONZ.

• Recent developments have been proposed to the electronic procedures for filing patent applications under the Patent Cooperation Treaty (PCT), which is administered by the World Intellectual Property Organisation (WIPO). “ePCT” is an online system that allows registered users to upload documents relating to an international application directly into WIPO’s processing system. We are aware of a proposal being developed by WIPO to modify its ePCT system to allow filing of multiple national phase applications, seeking patent protection in a number of PCT member states. We understand that the modified ePCT system would provide similar benefits to a SAP, but at a much lower cost to IPONZ. We also understand that work is underway between WIPO and IPONZ to pilot the modified ePCT system.

We note that IP Australia has not undertaken any further work on the SAP and SEP proposal, pending the outcome of this bill. Given the significant costs to IPONZ in implementing a SAP and SEP; the low likelihood that they would be used; and the lack of substantial benefits in terms of time and cost savings to New Zealand businesses, we consider that it is difficult to justify proceeding further with these initiatives.

We therefore recommend that clause 5 be deleted to remove the empowering provisions regarding SAP and SEP.

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